¡@¡@¡@¡@Article 131 (2) of ROC Patent Law
stipulates that ¡§a patentee initiating a complaint according to Articles 123 through 126
shall accompany therewith infringement assessment report and written notice having been
served by the patentee with the infringer requested the preclusion of infringement.¡¨ It
is very interesting to analyze and scrutinize this article at least from the following
aspects:

1) It is to be noticed that a patent law offense is
criminally punishable in this country. Articles 123 to 126 relate to violations of
manufacture of an infringing product or use of a patented method claim. Articles 127 to
129 relate to offenses of sale, display for sale, or importation of an infringing article.
Accordingly, we have:

A user of an infringing product is not criminally
punishable although still civilly liable;

Since this article is applicable only to offenders of
Articles 123 to 126, it is unnecessary for a patentee desiring an initiation of a
complaint against a possible infringer in respect of actions involving in Articles 127 to
129 to comply with requirements set forth in this article.

2) The complaint initiated by the patentee must be
accompanied by an infringement assessment report. According to Article 131(4) of ROC
Patent Law, ¡§the Judicial Yuan and the Executive Yuan shall coordinate to designate
special organizations for infringement assessment.¡¨ At present, said two Yuans have
appointed 68 organizations in totality therefor, among which most of them are
universities, quasi-governmental agencies, non-profit organizations and R & D
institutes. We solemnly analyze how this practice comes out and whether it has its
propriety as follows:

From the primitive thinking, the most appropriate
official organization to decide whether there is an infringement is the Patent Office
(i.e., NBS in the past or IPO at present). Nevertheless, the Patent Office is often
attacked and/or doubted with regard to its expertise in patent knowledge by so many
domestic and foreign parties. In addition, according to the Chinese traditional
philosophy, it is a spectacular virtue or appears very difficult for any one or an agency
to self-deny himself or itself even before the fact that his or its original decision
seems inviable. It is therefore that the Patent Office is not the proper organization to
this end;

Under a second thought, the action rendered by an
image-outstanding organization is always persuasive to the public in appearance. As
understandable, universities, quasi-governmental agencies, non-profit organizations and R
& D institutes normally are image-outstanding since it is believed that they are fair,
equitable and just; and

It is the latent consciousness of the Legislation
Yuan that Judicial Yuan and the Executive Yuan being respectively in charge of judicial
and executive systems in this country and the highest agencies of all judicial and
executive authorities should be able to competently designate qualified organizations
therefor. Nevertheless, all of these three Yuans jointly and/or separately err by failing
to realize:

The underlying reason why the Patent Office is
criticized in its patent expertise is it contracts lots of outside examiners, far more
than in-house examiners, for examining the patent applications. By the same token, it
selects members from those image-outstanding organizations to play the role of ¡§outside
examiners¡¨ for fairly, equitably and justly examining the patent applications.
Accordingly, we cannot stand unconsciously before the question that if those members for
the Patent Office cannot competently perform the initial patent-related functions of
examining the patent applications, why same members for another organization can
satisfactorily do the upper level patent-involving works of determining whether there is a
patent infringement?

For a report to be fair, equitable and just, it does
not necessarily be provided by an image-outstanding organization. On the contrary, we have
no sound reason or basis to believe that a report prepared by an image-outstanding
organization must be fair, equitable and just. This is especially true in view of the fact
that the one rendering the report in the image-outstanding organization is one who is an
outside examiner or a person leaving from a local patent office as a patent engineer and
joining in subsequently that organization, or a member who was a technician in that
organization and later requested thereby to play the role for preparing the report. The
outside examiner normally has an admiration-soliciting technical background and becomes an
examiner after trained for a couple of hours in patent practice. The patent engineer
leaving from and having experiences in the local patent office for a couple of years is
often tired from working therein as a patent practitioner and serves as an infringement
assessment reporter in a new agency. The technical member in the organization exhibits
some interests in or is requested by that organization to engage in patent matters and can
readily submit a statutory infringement assessment report on its behalf.

We thus know that although we cannot determine that
the one who makes the statutory infringement assessment report must not be a person who
indulges himself in the patent field, we can decide that normally, it is impossible for
him to have a patent knowledge better than a patent agent or patent attorney in a local
patent office who lives by patent practice. In litigation, an attorney weighs nothing if
he cannot submit before the court for the client a favorable infringement assessment
report. Without the favorable report made by an irrelevant person normally having inferior
patent knowledge than his at hand, he will lose the case regardless of how wonderful he
has argued in the proceedings. What is wrong with the three highest Yuans? Why the world,
Taiwan or ROC can be so shaped?

3) The complaint must also be accompanied by a copy
of a written notice which has been served by the patentee with the infringer who is
requested thereby to preclude infringement. According to Article 131(3) of ROC Patent Law,
¡§without submission of documents in the preceding paragraph, the complaint shall be
illegal.¡¨ It is believed that such provision is applaudable in that:

Although the patent infringement is statutorily
criminally punishable which is reported to be true in only one third of countries all over
the world, it is believed that it is not always justifiable to criminally treat an
offender with a possible exception that there is a seriously intentional infringer.
Accordingly, whether the infringer is malicious should first be found;

With the written notice having been served with the
infringer, it would be easier for us to ascertain whether the infringer has a criminal
malice if it still perform the infringing act after receipt of that notice;

According to the article, the notice must include a
passage requesting the infringer to preclude its infringement. By this provision, it will
be made clear that the infringer apparently has the malice upon infringing after the
notice receipt;

Since the criminal punishment for a patent
infringement needs not be necessary, the legal properness of criminally treating a patent
law offender or the legal justification of this article might thus be reinforced or
preferably excused by such provision.

4) Nevertheless, the merits of or the advantages
brought forth by Article 131(3) of ROC Patent Law have been undermined by Article 131(2)
of the same law by a clause of which it is unnecessary for a patentee desiring an
initiation of a complaint against a possible infringer in respect of actions involving in
Articles 127 to 129 to comply with requirements set forth therein in that:

It is true that the wrongdoing seriousness of acts,
offenses of sale, display for sale, or importation of an infringing article, provided in
Articles 127 to 129 of the Patent Law is lighter than that of manufacture of an infringing
product or use of a patented method claim as provided in Articles 123 to 126 of the Patent
Law. Nevertheless, it is believed that merits and advantages brought in by Article 131(3)
should not be overthrown without a stout consideration which can never be qualified by the
relevant clause in Article 131(2);

Specifically, given the provision in Article 131(3),
in order to protect the rights of the infringer, the patentee cannot criminally prosecute
thereagainst without the submission of the required documents for proving to that effect.
It will be ridiculous for the clause in Article 131(2) to exclude the application thereof
in respect of a lighter wrongdoing act since it is clear that one can see no reason why
rights of the infringer having a relatively light wrongdoing can be arbitrarily infringed
if it has already been statutorily apparent that rights of an infringer having a
relatively heavy wrongdoing can only be statutorily infringed. In other simple words, if
the law vividly provides that a right of a heavy wrongdoer should be protected, how can
one find any kind of reason ratifying that the very same right of a light wrongdoer need
not be protected?

It is believed that the reason why the current law
makes a mistake is that the lawmaker superficially mistakes that a relatively heavy
criminal offender needs be better protected which is so reflected by Article 131(2) but
fails to deeply takes the fact into consideration that rights of a relatively light
criminal offender deserve much more protected;

It thus appears safe for us to conclude that if
Article 131(2) were to survive, it seems better to proposedly read as the following: ¡¥a
patentee initiating a complaint according to Articles 127 through 129 shall accompany
therewith infringement assessment report and written notice having been served by the
patentee with the infringer requested the preclusion of infringement.¡¦

5) The story does not come to an end in the very
last paragraph. If we have agreed that rights of a light wrongdoer should be
constitutionally protected, can we immovably or carelessly stand before the assumption
that rights of a relatively heavier patent-related wrongdoer can be optionally interfered?
We will analyze this issue as follows:

A. It surely is legal that for a heavier crime,
rights of the potential criminal can be interfered before the court decision in order to
curb any further possible damage resulting from the crime and/or to preserve the
committing proof. The problem, however, resides in not only whether crimes in Articles 123
to 126 relate to heavier ones, but also in whether it is legally proper to allow the
patentee to so invade rights of the potential criminal for crimes stipulated in Articles
123 to 126. In this respect,

Although IPO commits that the figure of outside
examiners will be gradually diminished, up to now, the issued patent is possibly allowed
by an outside examiner so that its validity is subject to question;

Since the judge or the prosecutor normally take that
it is beyond their duty to really understand how the conclusion of a patent infringement
is reached and often believe that they have duly performed their work if they make their
decision according to the statutory infringement assessment report, they will by no means
have the capability to determine by themselves to interfere with rights of the potential
criminal without the statutory report. This will give rise to the effect similar to that
of Article 131(3). Specifically, although a complaint without an infringement assessment
report shall not be construed as illegal, such complaint will be required by the judge or
the prosecutor to supplement the report before a search warrant can be issued or a
favorable decision therefor can be rendered. In other words, without the statutory report,
they will no more be willing to issue a search warrant and/or to decide for the patentee
since they normally reject to assume by themselves the work of judging whether there is a
patent infringement. Thus, to win their favorable decision, the infringement assessment
report is a must to be submitted by the patentee.

B. Accordingly, in practice, even if the proposed
amended Article 131(2) does not require the submission of an infringement assessment
report for crimes stipulated in Articles 123 to 126, it will be impossible for the
patentee to petition a search warrant and/or to obtain a favorable decision therefor if
the judge or the prosecutor follow the current practice of not judging by themselves the
issue whether there is a patent infringement. As a result, this will apparently have the
same effect as if Article 131(2) stipulates that ¡¥a patentee initiating a complaint
according to Articles 123 through 129 shall accompany therewith infringement assessment
report and written notice having been served by the patentee with the infringer requested
the preclusion of infringement.¡¦ This is because even if a complaint without an
infringement assessment report will not be regarded as illegal, the complainant will
either be required later to supplement therefor or not obtain any a favorable decision
thereby until its submission so that the legal consequence is the same both for whether
the infringement assessment report is statutory or not.

C. There still is a remaining question that although
the legal consequence might be the same, is there any difference between that we stipulate
it to be illegal without the statutory report in a first instance and that we provide the
statutory report to be a prerequisite for a search warrant or a desired favorable decision
in a second instance? In this regard,

a)In the first case, the complaint shall be immediately dismissed if
unaccompanied by the statutory report. In the second instance, the complaint
without the report still is legal but hardly possible to obtain a desired
favorable court decision before the submission of the report. It would appear
suggestible to adopt the second alternative in that on the one hand, it is more
human or economic to allow the complainant to rectify its informalities upon
complaining at a later stage. On the other hand, it is controversial whether it
is constitutional to require the submission of the infringement assessment
report upon complaining;

b) It is the duty or obligation of the court to determine whether there is a
crime by finding the real fact and applying the proper law. It thus appears to
be inappropriate to require the complainant to submit any kind of report for the
purpose of assisting the court to render its decision. This is a big problem,
which will be detailed hereinafter.

Part II. Legal Status of Infringement Assessment
Report

¡@¡@¡@¡@As hereinbefore described, Articles 131
(2) and (3) of ROC Patent Law respectively stipulate that ¡§a patentee initiating a
complaint according to Articles 123 through 126 shall accompany therewith infringement
assessment report and written notice having been served by the patentee with the infringer
requested the preclusion of infringement¡¨ and that ¡§without submission of documents in
the preceding paragraph, the complaint shall be illegal.¡¨ Accordingly, the infringement
assessment report is the legal prerequisite of a complaint. In practice, such infringement
assessment report plays everything in a patent litigation in this country. Specifically,
if a party has at hand a favorable such report rendered by an organization designated by
the Judicial Yuan and the Executive Yuan as stipulated in Article 131(4) of ROC Patent
Law, the party will win the case regardless of whatsoever or how the real situation might
or would be, since the court will decide the case totally according to the conclusion of
the infringement assessment report. Such practice raises the following issues which will
be discussed hereinafter:

Is it appropriate for the court to do so?

Is it legal for the court to do so?

How such practice will influence the operation of the
patent system here?

Shall such practice be abolished?

1) Is it appropriate for the court to do so?

¡@¡@¡@¡@As mentioned in Part 1, the one who
renders the court-relying report in the image-outstanding organization is an outside
examiner who normally has an excellent technical background but has relatively limited
patent knowledge, a person who has been a patent engineer in and later left from a local
patent office to join in subsequently that organization, or a member who was a technician
in that organization and later requested thereby or actively requesting to play the role
for preparing the report. It appears to be soundly reasonable for us to conclude that
under a normal condition, a regular patent practitioner, i.e. a patent agent or attorney
is much more patent-experienced than the report-rendering one of any origin. It thus is
unacceptable for general concerns of average wisdom to bear the fact that the witness of a
regular patent practitioner is less valued than that of a report-rendering person of less
expertise. It is true that the patent practitioner acting on behalf of a specific party
usually represents interests of the specific party. This factor shall in no way explain
that the opinions of interests-representing patent practitioner are more valueless than
that shown on the report issued from an image-outstanding organization. This is because
opposite parties are equal to be represented by patent practitioners acting on behalf of
their specific interests. Through acute and unsympathetic disputes therebetween, the
judicial agency is able to discern right from wrong. We thus know it is beyond appropriate
for the court to take the report from the image-outstanding organization as the sole
standard for making its decision.

2) Is it legal for the court to do so?

¡@¡@¡@¡@The court is assumed to play the role of
uttering in the human society what is right and/or wrong and executing what it believes to
be justified, by which the social order is preferably maintained. The court is assumed to
solve any dispute possibly occurred in the human society. The judge, after properly
trained in the university and scrutinized by the qualification examination, should have
the ability of so doing. A bright brain with a clear logical reasoning is fine for
resolving any tough or tangled problem under the premise that the court is free to invoke
any possible assistance originated outside thereof. It is true that it is somewhat
difficult for the judge only academically disciplined in respect of laws without
scientific subjects to decide on a patent-related dispute. Nevertheless, it is well
believed that a bright brain with a clear logical reasoning ability is wonderful for
melting any troubled problem.

¡@¡@¡@¡@Under the current practice, the court
will decide a case according to the infringement assessment report. This does not differ
from that the court entrusts the image-outstanding organization to decide the case
therefor. This shall be infeasible not only because the report-rendering person is not
suitably trained in respect of laws or the patent law but also because this will seriously
injure the intended purpose and the sacrosanctity of the judicial system. Accordingly, all
courts themselves violate the patent law since they do not find facts and apply
appropriate articles of the patent law by themselves, and additionally violate the
constitution since they do not decide the case presented before them by themselves.
Currently, what the court finds is to find whether there is an infringement assessment
report, and what the court applies is to apply one or more of articles of the patent law
if the report concludes there is an infringement. This simple work needs not be done by a
court judge and can be perfectly performed by the first grade student in the elementary
school. It is therefore believed that:

A. What the court should find is to find by itself
with a well-trained clear logical reasoning ability whether there exists the fact that
there is an infringement in substance. To this end, it is necessary for the court to
understand how the claim in a patent is drafted and how the allegedly infringing product
or process is similar to the claim;

B. What the court should apply is to suitably apply
proper articles from the patent law to subtly differentiated facts and then to finally
choose the appropriate article of the patent law to decide the case;

C. It absolutely is the obligation and/or duty of
the court rather than of any other organization to find facts and apply the law in the
above-mentioned manner. The image-outstanding organization can at the utmost serve as a
respectful medium for technical consultation for the case for the court and can never have
the capability to play a role to prepare a report with which the decision of the court
fully complies.

3) How such practice will influence the operation of
the patent system here?

Under such system, the one who really decides a
patent infringement case is the report-rendering person rather than the judge. This is
logically ludicrous in that:

A. The report-rendering person normally has a
technical background and has no intimate legally logical reasoning disposition by which a
judge is assumed to have the capability to temporarily play the role of God to bring forth
justice to the world. Although the technical opinions expressed by ones in the
image-outstanding organization could be referred to in most cases, the image-outstanding
technical individual can by no means assume the work of deciding a case for the competent
judge;

B. The judge always having a bright brain with a
clear logical reasoning ability can normally properly decide a case even he does not have
a technological background. This is because through a precise legal analysis, it is
possible for us to tabulate what kinds of technical problems and legal problems must be
answered before we can justly decide a case. It is natural for the judge to answer the
legal problems. For answering the technical problems, it is free for the judge to ask the
help of any a competent image-outstanding organization. What and how the image-outstanding
organization has answered the technical problems are reference data only for the court to
decide the case. Such procedures are normal and standard for general court practice. We
cannot see any reason why a patent dispute should not so follow.

¡@¡@¡@¡@Accordingly, under the present practice,
the patent system does not run in the correct direction and the national research and
development activities will be distorted in some way. This is because:

A. Although the infringement assessment report
conclude without exception with a proviso that such report and its formal conclusion are
merely for the purpose of reference for the court and there might exist further
controversial issues to be clarified, the court normally disregards that proviso and
directly takes the normal conclusion of the report for making its decision. The fact that
whether there is an infringement is to be decided in essentiality by an image-outstanding
organization normally of relatively limited patent knowledge is hurting to the justice and
social order;

B. By allowing the court to decide a case entirely
in accordance with the contents of the infringement assessment report, we have agreed the
court to frontally attack the law. Under such practice, the court needs not exist for
patent dispute. All patent disputes can be decided by the image-outstanding organization;

C. Such practice nearly ruins the dignity of the
regular patent practitioner. Since the witness or what the patent practitioner says hardly
plays an important role, a patent agent or attorney possibly having ample patent knowledge
or experience is confined to provide services in drafting the specification. Furthermore,
regardless of how great or bad the specification is drafted, the unchangeable destination
is that the specification is to be interpreted by a ¡§patent layman¡¨ in an
image-outstanding organization. How poor or what a pity for the patent practitioner to be
born in this country;

D. The recent research and development in the
industry is to integrate or unify academy, government and industry together to edge into
the production field. Under such environment, there always is a close relationship between
the industry and the academy or government. The later occupies a large portion of the 68
image-outstanding organizations. Such close relationship sometimes opens an opportunity
for a party to influence the conclusion of the report or to obtain a favorable report. The
justice in the human society or the truth in the world is thus damaged.

4) Shall such practice be abolished?

¡@¡@¡@¡@The patent system is taken to be sick in
the past. With such statutory report existent for one day, the patent system in this
country will get recovered in no way for an even longer period of time. It is true that
the infringement assessment has solved for the court some headache problems in deciding a
patent dispute. Nevertheless, it is based upon an improper basis, which should be ruined.

¡@¡@¡@¡@With a bright brain having a clear legal
logical reasoning, it is beyond question for the judge to find his ways to accurately
decide a case. For a judge, the real reason might be that he or she is too busy to study
the case in detail, rather than that it is too difficult for him or her to understand or
decide a patent-related case.

¡@¡@¡@¡@We definitely assert that such practice
of submitting an infringement assessment report be abolished as soon as possible in order
that:

The patent system normally operates;

Social order in respect of patent is correctly
disciplined;

Research and development in the industry are
healthily evolved;

The national patent justice is righteously
maintained;

The patent environment is regularly developed;

The national patent legal network or sector can duly
work; and

The national patent level can keep pace with the
international upgraded practice.

¡@

Part III. Collateral Discussion on Warning Letter

¡@¡@¡@¡@As hereinbefore described, according to
Articles 131 (2) and (3) of ROC Patent Law, for some patent crimes, a warning letter
requesting the infringer to preclude the infringement is a prerequisite for a legal
complaint. This also is a questionable legislation practice in that whether there is a
patent crime is determined by whether the infringer has a malice for that crime but not
depends on whether the infringer dares to continue to commit the crime after receiving a
warning letter from the patentee. In this regard, the following questions might deserve
discussed:

Is it proper to premise a legal complaint by a
warning letter?

Is it necessary to require a warning letter for a
legal complaint?

1) Is it proper to premise a legal complaint by a
warning letter?

¡@¡@¡@¡@Legally theoretically, a crime is
subjectively conditioned with a malice for a crime free from negligent punishment. As is
known, for a relatively light crime, there normally is not a negligent penalty. This is
the case for a patent crime. For a negligent infringer, a warning letter reminds it from
staying away from the patent crime so that such practice is satisfactory in order to
exclude the negligent infringer from inadvertently committing a patent crime.

¡@¡@¡@¡@For an infringer of a malice in fact,
such practice apparently opens so large a legal leeway enabling the malicious infringer to
leisurely escape from a legal sanction since it needs only stop its infringing acts after
its receipt of the warning letter. Such legislation is inappropriate in that whenever a
country desires to exercise her penal authority, there must be an act believed having on
the social order a serious influence deserved penally sterilized. Once the crime is
established, the penalty for the crime can be reprieved or commuted only after the
criminal penalty is imposed upon the criminality. It is beyond the legislation theory or
one¡¦s reasonable legal thought that a law criminates a criminality on the one hand but
frees the criminality from being criminated when the criminal does not receive a warning
letter in advance on the other hand. On the contrary, the law can provide an infringer
continuing the infringement is criminally punishable after it has received a warning
letter. In the latter circumstance, once the criminality is established, the crime is
definite. Through such provision, the criminal sense of a patent law violator is much
alleviated. This might be a way toward which we should devote ourselves to revise the law.

¡@¡@¡@¡@For an infringer of a malice in law, the
current practice also negatively allows it to be reminded that it might involve in a
patent infringement because it is permitted by the present law to carefreely infringe
until it is formally served with the warning letter. In this regard,

If the law does not desire to exercise the penal
authority, it should free from being provided with a penal provision. Now that the law has
provided what will constitute a crime, it is improper to establish the crime, depending on
whether a third party, i.e. the patentee, will do some act;

It is astatic or unstable to condition the national
penal authority on whether or not the patentee will issue a warning letter to the
infringer. The penal punishment is a national authority, the initiation of which shall not
be deterred by an act of an individual;

It is unjust, unfair or inequitable for the patentee
since whether it is criminally protected depends on whether there is its involvement in
the infringing scenario of the infringer;

This practice originates from a sinful provision
since it cultivates the nationals to speculate their success in whether they will receive
a warning letter from the patentee.

2) Is it necessary to require a warning letter for a
legal complaint?

¡@¡@¡@¡@There already are voices advocating that
to require the submission of the infringement assessment report as a condition of a legal
complaint is violating the constitution since it unduly limits the national¡¦s litigation
right conferred by the constitution. Through the above discussion, it would appear that
requiring the submission of the warning letter as a condition of a legal complaint will
have the same problem.

¡@¡@¡@¡@According to the criminal proceedings
here, there are two alternatives to criminate a criminal, i.e. instituting a complaint
through the public prosecutor and initiating a private prosecution by the infringed
itself. Although the present provisions have made it clear that submissions of
infringement assessment report and warning letter are requirements of a legal complaint
through the public prosecutor, it is believed that this will be inapplicable in a private
prosecution in that for the latter, the judge might be convinced by the private prosecutor
without the above-referenced report and letter. If not, in order to convince the judge
that there is a crime, the private prosecutor must present before the judge persuasive
proofs, e.g. the above-mentioned infringement assessment report and the warning letter.

¡@¡@¡@¡@The fact that a lot of the
image-outstanding organizations often reject to provide an infringement assessment report
further contributes to constitute that premising a legal complaint by the submission of
the report is unconstitutional. It is believed that to require a warning letter in advance
for a legal complaint is also unconstitutional in that it unduly disregards or exempts the
existence of a malice of the infringer which might be vividly established to substantiate
a crime. (1999, 6, 12)